2:15-cv-01365
E.D. Wis.Jun 1, 2018Background
- Plaintiff Waukesha Floral & Greenhouses, Inc. (doing business as Waukesha Floral) has operated at 319 S. Prairie Ave., Waukesha since 1907 and holds a USPTO registration for “Waukesha Floral.”
- Defendants include James Possi, Your Florist LLC, and Ann Rice; Possi has long operated florist businesses in Waukesha and registered many trade names in Wisconsin.
- A 2000 stipulation required Possi/Best Florist to cease using trade names containing “Waukesha” contiguous with “Florist/Floral/Greenhouse.”
- Plaintiff sued in 2015 alleging Lanham Act claims, common-law trademark/tradename infringement, unfair competition, violation of Wis. Stat. §100.18, and breach of the 2000 stipulation; both sides moved for summary judgment.
- Court granted dismissal of the §100.18 claim and dismissed claims based on the unregistered name “Waukesha Floral & Greenhouse” for lack of evidence of secondary meaning; but denied summary judgment on plaintiff’s registered mark infringement claims and denied defendants’ affirmative-defense and Rice dismissal motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectable mark for “Waukesha Floral” | Waukesha Floral holds a valid USPTO registration; prima facie protectable mark | Defendants argue fraud/weakness/geographic descriptiveness (no secondary meaning) | Registration presumptively valid; defendants waived fraud defense; factual dispute exists over mark strength prevented summary judgment for defendants |
| Protectable tradename “Waukesha Floral & Greenhouse” | Plaintiff contends it has acquired secondary meaning through longstanding use and advertising | Defendants say the term is descriptive/geographic and plaintiff lacks direct evidence of secondary meaning | Court: plaintiff failed to show secondary meaning; claims based on that name dismissed |
| Likelihood of confusion / trademark infringement | Names used by defendants (e.g., Waukesha Florists, Waukesha Flowers) are highly similar and used in same market -> confusion likely | Defendants claim descriptive/geographic weakness of mark, lack of actual confusion, permissible use (search listings), and benign intent | Genuine issues of material fact (mark strength, actual confusion, intent) — summary judgment denied to plaintiff on registered-mark infringement |
| Affirmative defenses: fair use, unclean hands, laches | N/A (plaintiff opposes these defenses) | Defendants assert fair use, unclean hands, laches to bar relief | Court rejects fair use, unclean-hands, and laches at summary judgment (defenses fail as a matter of law or lack evidence) |
| Liability of Ann Rice | Plaintiff asserts Rice personally liable for Best Floral/unincorporated business actions | Defendants contend Rice was merely an employee and Your Florist LLC (or other corporate structure) shields her | Material factual dispute exists whether Rice operated the unincorporated Best Floral; summary judgment denying dismissal of claims against Rice |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden-shifting)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (drawing inferences in summary judgment)
- Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143 (trademark infringement treated as tort/common-law guidance)
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (trademark fair-use doctrine)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (elements of unfair competition/likelihood-of-confusion factors)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (likelihood-of-confusion factors in Seventh Circuit)
- Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813 (laches in trademark context)
- Venters v. City of Delphi, 123 F.3d 956 (requirement to plead affirmative defenses timely)